Raghbir Singh, Vice Chairman - (1.) BY this petition, the appellants challenge the order dated 29th June, 2001 of the Assistant Registrar of Trade Marks, Chennai. The appellants/applicants had filed an Appeal (TMA/7/2002) before the Hon'ble High Court of Madras which has been transferred to Intellectual Property Appellate Board (IPAB) in pursuance of Notification No. S.O. 1150 (E) dated 1st October, 2003 under Section 100 of the Trade Marks Apt, 1999.
(2.) The facts that are relevant and material for deciding this case are that notice of opposition No. MAC-3248 by the first respondents filed on 24th February, 1995 objecting to the registration of the trade mark 'BINNY' under application No. 513891 dated 25th July, 1989 by the above named appellants/applicants in class 25 in respect of hosiery, readymade garments, under garments, wearing apparels, articles of clothing, brassieres, socks and stockings for wear claiming user of the mark therein from the year 1944 was allowed under above referred order dated 29th June, 2001 of the learned Assistant Registrar. The opponents claimed use as manufacturers of all kinds of footwear and marketing the products throughout India under their distinct lable 'BINNY' since 1st February, 1979. They claim that their label 'BINNY' has been registered as a trade mark in respect of foot-wears under No. 384898 dated 2.1.1982 under the provisions of the Trade and Merchandise Marks Act, 1958 and as a copyright under No. A-29194/80 under the Copyright Act, 1957. They also claimed that the impugned trade mark was advertised as accepted with the condition; of association with the applicants' registered trade mark Nos. 241063B dated 15th March, 1967 and 355901B and pending application No. 459347. They further claimed that in rectification proceedings filed by them vide MAS-325 under Sections 46 and 56 of the Act, a rectification has been carried out vide Assistant Registrar's order dated 23rd August, 1993 and the registered trade mark no. 241063B has been removed from the Register and another rectification proceedings filed by them under MAS-362 for non use against the appellants' subsequent registered trade No. 355901B under Sections 46 and 56 of the Act, is still pending. Appellants/applicants had vide application dated 15th April, 2002 prayed the Hon'ble High Court of Madras to condone delay of 188 days in filing appeal before that Hon'ble High Court which was allowed. Respondents No. 1 vide their letter dated 26th December, 2003 sent to this Board has requested to dismiss the petition of condonation and the appeal. However, the Hon'ble High Court has allowed condonation of delay and so we took up for consideration the appeal against the Assistant Registrar's order dated 29th June, 2001 at the hearing before the Intellectual Property Appellate Board (IPAB) on 30th December, 2003. Shri A.A.Mohan, Advocate appeared for the appellant but none appeared for the respondent.
(3.) THE learned counsel for the appellants Mr. A.A.Mohan has brought to the notice of this Board that an appeal against the decision of the Assistant Registrar rectifying the register in relation to Trade Mark No. 241063B under Section 46 of the Trade and Merchandise Marks Act, 1958 was decided by the High Court of Madras on 17th July, 1998 wherein the Hon'ble High Court had set aside the orders of the Assistant Registrar. He filed a photo copy of the orders of the Hon'ble High Court. In view of this, the present factual position is that the registration of the trade mark 'BINNY' under No. 241063B in favour of the appellants is still valid and alive on the register of trade marks. Since a new situation has arisen, wherein a new fact of the matter, though existing when the Assistant Registrar passed orders allowing opposition and refusing registration on 29th June, 2001, has been made available now, it shall not be appropriate to ignore the same. THE ends of justice can only be met when due note thereof is taken while taking a decision about the registrability or otherwise of the trade mark.;